Examination Guide 3-12

DRAFT – 3 AUG 2012

Universal Symbols in Marks

August 2012

INTRODUCTION...... 1 I. UNIVERSAL SYMBOLS & THEIR USE IN MARKS...... 2 A. Universal Symbols Explained...... 2 B. Relevance of Universal Symbols to Examination...... 2 II. REVIEWING MARKS CONTAINING SYMBOLS...... 3 A. Identifying Universal Symbols in Marks...... 3 B. Marks Displaying an Unusual Depiction of a Universal Symbol...... 3 C. Marks Displaying an Accurate Depiction of a Universal Symbol...... 4 III. FAILURE TO FUNCTION...... 4 A. Determining Whether a Universal Symbol Functions as a Source Indicator...... 4 1. Informational Universal Symbols...... 4 a. Universal Symbols that Impart Information About the Goods or Services...... 4 b. Universal Symbols that Convey an Informational Message...... 5 2. Ornamental Universal Symbols...... 5 B. Mark Consists Entirely of a Universal Symbol that Fails to Function...... 6 1. Applications Based on Sections 1(b), 44, or 66(a)...... 6 2. Applicant’s Response to Refusal...... 6 C. Mark Includes a Universal Symbol that Fails to Function...... 7 IV. OTHER RELEVANT REFUSALS...... 7 A. Merely Descriptive...... 7 B. Deceptive or Deceptively Misdescriptive...... 8 APPENDIX A: UNIVERSAL SYMBOLS COMMONLY APPEARING IN MARKS...... 9 APPENDIX B: EXAMPLES...... 13

Introduction

Universal symbols are designs, icons, or images that quickly provide information, usually without words. They may appear anywhere the immediate delivery of a helpful or important message is desired, and frequently they appear in applied-for marks. However, the informational aspect of these symbols is often at odds with the functions of trademarks and service marks: to identify and distinguish one’s goods or services, and indicate their source. In most instances, a universal symbol will not function as a trademark or service mark, but instead will serve only to impart information, convey a message, or provide ornamentation. In addition, a universal symbol may merely describe goods or services, or lead to a false impression about them. Nonetheless, under certain circumstances, a universal symbol can function as a source indicator and otherwise be registrable.

This examination guide discusses universal symbols; addresses the examination issues relevant to marks featuring these symbols, including when an examining attorney must refuse registration or require a disclaimer of a symbol; and provides examples illustrating the concepts covered. The guidance provided supersedes any previous USPTO guidance on this topic. DRAFT – 3 AUG 2012

For general comments about this guide, post here. I. UNIVERSAL SYMBOLS & THEIR USE IN MARKS Discuss this section here.

A. Universal Symbols Explained

The term “universal symbol,” as used in this examination guide, refers to any design, icon, or image that conveys a widely recognized or readily understood meaning.1 Universal symbols quickly provide information to those encountering them,2 and are typically available for use by anyone who might have a reason to employ them in an informational manner. For instance, a universal symbol may be used to give notice of a particular condition or to indicate a characteristic of an object or area. Thus, universal symbols appear in a variety of places, such as on road signs, near dangerous machinery, on medical apparatus, in hazardous locations, on recyclable materials, or on product warning labels. Usually, the context in which a universal symbol appears is crucial in determining the symbol’s significance.

The following are examples of common universal symbols:

 The recycling symbol typically designates materials that are recyclable or recycled, but may also indicate that goods or services involve recycling or are otherwise environmentally friendly.3

 The international radiation symbol indicates proximity to a source of radiation or radioactive materials.4

 The biohazard symbol indicates the presence of pathogens or other matter that is potentially harmful or poses a health risk.5

 The universal prohibition symbol, which usually appears superimposed over another image or wording, is a visual representation of “no,” “not,” or “prohibited.”6

See Appendix B for specific examples involving universal symbols in the context of trademark examination.

B. Relevance of Universal Symbols to Examination

Universal symbols may appear as one element of an applied-for mark, or they may form an entire mark. Because universal symbols immediately provide information when used in a relevant context, the presence of one in a mark may necessitate a refusal of the mark or a disclaimer of the symbol.7

Specifically, a universal symbol may fail to function as a mark because it only imparts information, conveys a message, or provides ornamentation.8 In addition, a universal symbol may merely describe a feature, quality, function, purpose, or characteristic of goods or services.9 And if a universal symbol in a mark creates a false impression about a

2 DRAFT – 3 AUG 2012 characteristic or quality of an applicant’s goods or services, the mark may be deceptive or deceptively misdescriptive.10

As explained in Part II, however, registration of a universal symbol may be permissible in some instances.

II. REVIEWING MARKS CONTAINING SYMBOLS Discuss this section here.

For each application, the examining attorney must determine whether the mark contains a universal symbol. Some universal symbols, such as the recycling symbol, are immediately identifiable. Others may not be, and applications for marks containing a symbol do not always identify the symbol, explain its significance, or indicate whether it is shown in a stylized or unusual form.

A. Identifying Universal Symbols in Marks

If an applied-for mark includes or consists of a symbol (or an unfamiliar symbol-like element), the examining attorney should review the application for any information the applicant may have provided about the symbol.11 The examining attorney may also use the mark’s assigned design codes to determine the name of the symbol and to search the USPTO database for applications and registrations that describe the symbol.12 After identifying the symbol, the examining attorney may find additional information about it by using Internet search engines or symbol reference websites.

Even without the name of the symbol, the examining attorney may still be able to find information about it by entering a textual description of it in an Internet search engine13 or by consulting a symbol reference website that provides a means of searching based on a symbol’s graphical characteristics.14 In addition, the Trademark Law Library holds a number of reference books about symbols and their meaning,15 and its librarians are available to research questions regarding the identity, significance, and use of symbols. Furthermore, under Trademark Rule 2.61(b), the examining attorney may require the applicant to provide additional information about an unfamiliar symbol in a mark.16

The examining attorney’s research may show that a symbol (or symbol-like element) in a mark is not a universal symbol and that it otherwise has no particular informational or descriptive significance when used in connection with the applicant’s goods or services.17 In these instances, the examining attorney need not take any further action as to the universal symbol issue, other than ensuring that the application record contains a mark description that accurately describes the significant elements of the mark.18 Of course, the examining attorney should otherwise review the application according to standard USPTO practice and determine whether it complies with all applicable trademark statutes and rules.

B. Marks Displaying an Unusual Depiction of a Universal Symbol

If the mark contains a universal symbol, the examining attorney must determine whether the mark displays the symbol in the usual manner or otherwise features an accurate depiction of the symbol. This may be done by comparing the symbol in the mark with any accurate depictions of the symbol the examining attorney finds while researching the symbol.

Generally, a universal symbol in an applied-for mark should be considered registrable matter if it is highly stylized, if it incorporates elements that are not usually in the symbol,

3 DRAFT – 3 AUG 2012 or if it is integrated with other matter in the mark, and, as a result, a distinctive commercial impression separate and apart from the symbol’s usual significance is created or a source- indicating unitary whole is formed.19 However, displaying an accurately depicted universal symbol as a replacement for a letter in a mark’s literal element normally will not change the symbol’s usual impression (or create a unitary whole),20 nor will minor alterations to the symbol, such as slight stylizations or nondistinctive changes to color scheme or proportions. For specific examples in which the stylization or otherwise unusual depiction of a universal symbol in a mark does, or does not, result in a distinctive commercial impression or create a source-indicating unitary whole, see Appendix B.

C. Marks Displaying an Accurate Depiction of a Universal Symbol

If the mark displays the universal symbol in the usual manner, or otherwise features an accurate depiction of the symbol, the examining attorney must determine whether, in view of the identified goods or services, it is necessary to issue a refusal or disclaimer requirement based on failure to function, mere descriptiveness, deceptive misdescriptiveness, or deceptiveness grounds.

III. FAILURE TO FUNCTION Discuss this section here.

The USPTO will not register an applied-for mark unless it functions as a mark.21 That is, the mark must serve as an indicator of the source of the goods or services, identifying and distinguishing them from those of others.22 Not every designation that a party places on goods or packaging, or uses in connection with services, necessarily performs these source- indicating functions, regardless of the party’s intentions when adopting the designation.23 And some designations can never serve as a source indicator no matter how they are used.24

A. Determining Whether a Universal Symbol Functions as a Source Indicator

The determination as to whether a universal symbol in a mark functions as a source indicator involves considering the significance of the symbol, the nature of the symbol’s use in the relevant marketplace, and the impression created when the mark is used in connection with the identified goods or services.25

Relevant evidence of a symbol’s significance and usual manner of use includes the resources referenced in Part II. A, any other competent materials indicating the meaning of the symbol, and Internet excerpts or trade/industry matter showing the symbol being used in a particular field or context, or in connection with the relevant goods or services.

As explained below, these considerations may lead to the conclusion that the mark does not serve as a source indicator, but instead fails to function because it (1) imparts information about the goods or services, (2) conveys an informational message (though not necessarily about the goods or services themselves), or (3) serves only as ornamentation on the goods or services.

1. Informational Universal Symbols

a. Universal Symbols that Impart Information About the Goods or Services

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Informational matter is not registrable as a trademark or service mark.26 When a universal symbol in an applied-for mark is used in its usual context or field, or with relevant goods or services, it will likely impart its generally recognized meaning and thus perform an informational function, rather than serve to identify any single source of the goods or services.27 For instance, because the biohazard symbol commonly appears on items to indicate the presence of hazardous materials,28 the symbol is unlikely to function as a trademark on goods such as containers for disposing of medical waste.

In these circumstances, the symbol’s position, prominence, and surrounding context on the specimen of use will not be as significant in the analysis, because the symbol will function as informational matter regardless of its manner of use on the specimen.29 Nonetheless, the examining attorney should analyze how the mark (and the symbol in it) is used on the specimen because it may lend further support to the failure-to-function refusal.

Sometimes a symbol is applied to goods or services outside the symbol’s normal context and the symbol could therefore serve a source-indicating function. Thus, the biohazard symbol could function as a service mark for live musical performance services,30 for example, because the symbol would not provide any relevant information about the services, even when viewed by someone who knows what the symbol usually means.

b. Universal Symbols that Convey an Informational Message

Even if an applied-for mark does not directly impart information about goods, it may nonetheless fail to function if it conveys an informational message to others.31 For example, common phrases and slogans that are frequently displayed by many different parties on various goods are not likely to be viewed as source indicators, even if the matter is being used in a non-ornamental manner.32 Instead, such goods would likely be purchased for the message the phrase or slogan conveys.33

Likewise, when certain commonly used universal symbols appear on goods such as clothing, fashion accessories, and household items, they would likely be perceived as conveying an informational message and the goods featuring these symbols would likely be purchased for that reason. For example, when the recycling symbol appears on the upper-left chest area of a t-shirt, those encountering the shirt are likely to assume that it indicates support for recycling or environmental causes in general. And a peace symbol used on t-shirts or stickers likely will not function as mark, because even if it is not ornamental and does not necessarily provide any particular information about the goods themselves, it is informational in the sense that it conveys a message of supporting peace.

The examining attorney may support a failure to function refusal in these cases by providing evidence that indicates the widely recognized meaning of the symbol, establishes that the symbol is commonly used to convey particular information, and shows that the symbol commonly appears on the goods at issue or analogous goods.34 Factors such as the symbol’s position and prominence on the goods, as shown by the specimen of use, may also support the determination that the matter will be perceived only as conveying a message.35 As with any other substantive refusal, the amount, type, and nature of the evidence required to support a failure-to-function refusal will vary depending on the facts of the particular application.

2. Ornamental Universal Symbols

Matter that serves only as an ornamental feature of goods does not identify and distinguish the goods and, thus, does not function as a trademark.36 Like any other design element,

5 DRAFT – 3 AUG 2012 universal symbols may be used ornamentally on goods such as clothing, jewelry, fashion accessories, and household items. In these instances, the symbol’s position, prominence, and surrounding context on the specimen are particularly significant in determining whether the matter serves as ornamentation. For more information on the relevant considerations, see TMEP §§1202.03–1202.03(d).

In some cases, it may be appropriate to issue a failure-to-function refusal based not only on a determination that the applied-for mark is ornamental, but also on a finding that it provides information or conveys a message. The examining attorney should inform the applicant of the usual response options for an ornamental refusal (i.e., showing secondary source, claiming acquired distinctiveness, amending to the Supplemental Register)37 only if the mark is capable of serving as a trademark and does not also fail to function because it imparts information or conveys a message.

See Appendix B for examples of marks featuring universal symbols that fail to function as source indicators.

B. Mark Consists Entirely of a Universal Symbol that Fails to Function

If an applied-for mark consists entirely of a universal symbol and the examining attorney determines that the universal symbol fails to function as a source indicator for the identified goods, then the examining attorney must issue a refusal under Trademark Act Sections 1, 2, and 45.38 For service marks, the refusal is based on Trademark Act Sections 1, 2, 3 and 45.39 And for applications seeking registration on the Supplemental Register, the statutory basis for the failure-to-function refusal is Trademark Act Sections 23 and 45.40

When issuing a failure-to-function refusal, the examining attorney must explain the particular reasons the applied-for mark does not function as a trademark or service mark41 and provide sufficient evidence in support of the explanation.42 See Part II. A and Part III. A for further discussion of evidence.

1. Applications Based on Sections 1(b), 44, or 66(a)

Generally, the failure-to-function refusal is a specimen-based refusal.43 However, the examining attorney may issue a failure-to-function refusal for applications based on Section 1(b), Section 44, or Section 66(a) if information in the application record or other available evidence is dispositive of the failure of the matter to function as a trademark or service mark.44

If the examining attorney is otherwise issuing an Office action and anticipates refusing an applied-for mark in a Section 1(b) application on failure-to-function grounds once the applicant submits a specimen with an allegation of use, the examining attorney should advise the applicant of the potential refusal.45 Failure to provide an advisory does not preclude an examining attorney from refusing registration once the specimen of use is reviewed.46

2. Applicant’s Response to Refusal

If the applied-for mark fails to function because it consists of a universal symbol that is informational or that conveys an informational message, the examining attorney should not suggest that the applicant respond by claiming acquired distinctiveness or amending the application to seek registration on the Supplemental Register. The relevant issue is not whether the mark is distinctive, but, instead, whether the matter in question even functions

6 DRAFT – 3 AUG 2012 as a mark.47 Therefore, neither a claim of acquired distinctiveness under Trademark Act Section 2(f) nor an amendment to the Supplemental Register is a proper response to the refusal.48 Furthermore, allowing registration in these instances, either on the Principal Register under Section 2(f) or on the Supplemental Register, would inhibit others from using informational matter that rightly belongs in the public domain.49

In addition, the examining attorney should not suggest that the applicant submit a substitute specimen or amend to an intent-to-use filing basis in these cases. If the mark is informational or conveys an informational message, the applicant likely will be unable to provide a specimen showing proper trademark or service mark use.50 Of course, the examining attorney must review any substitute specimen submitted to confirm that refusal remains warranted.

Finally, if a mark consisting of a universal symbol fails to function only because it is used in an ornamental manner on the specimen, and it is possible that the mark could function if used in a trademark manner, then all of the response options discussed immediately above should be suggested by the examining attorney, if otherwise appropriate.

C. Mark Includes a Universal Symbol that Fails to Function

If a universal symbol fails to function as a source indicator because it is informational or conveys an informational message, and it appears along with other matter that is descriptive, generic, or otherwise non-source-indicating, the examining attorney must issue a failure-to-function refusal. See Part III. B. In these instances, the other matter in the mark does not diminish the informational nature of the universal symbol or the mark as a whole.

If a universal symbol fails to function as a source indicator because it is informational or conveys an informational message, and it appears in a non-unitary manner with other registrable matter that is arbitrary, fanciful, suggestive, or otherwise source-indicating, the examining attorney must require a disclaimer of the universal symbol.51 The examining attorney should not suggest that the applicant claim acquired distinctiveness in part as to the symbol. See Part III. B. 2.

An applicant may also delete a purely informational universal symbol that appears along with other registrable matter, provided the symbol is separable from the other matter and the deletion does not materially alter the commercial impression of the mark.52

IV. OTHER RELEVANT REFUSALS Discuss this section here.

Examining attorneys should also consider the following potential grounds for refusal when reviewing marks including or consisting of universal symbols. In addition to those discussed below, the examining attorney should determine whether there is a sufficient basis for any other relevant refusals (e.g., a Section 2(d) refusal).

A. Merely Descriptive

Often, when the examining attorney has determined that a universal symbol fails to function because it only provides information about the goods or services, the available evidence will also support a refusal (or a disclaimer requirement) under Trademark Act Section 2(e)(1) based on mere descriptiveness.

If an applied-for mark consists of a merely descriptive universal symbol and other descriptive, generic, or otherwise non-source-indicating matter, then the mark is merely descriptive in its entirety and the examining attorney must issue a refusal under Section 2(e)(1). If an applied-for mark consists of a merely descriptive universal symbol, along with other arbitrary, fanciful, or suggestive matter, the examining attorney must require a disclaimer of the universal symbol unless the composite mark creates a unitary commercial impression.53

When both a Section 2(e)(1) and a failure-to-function refusal are issued, the examining attorney should not suggest that the applicant claim acquired distinctiveness or amend to the Supplemental Register. For more information, see Part III. B. 2.

B. Deceptive or Deceptively Misdescriptive

The inclusion of a universal symbol in a mark may lead consumers to believe the goods or services have a particular characteristic or quality. For instance, a mark featuring the recycling symbol may lead to a perception that the goods to which the mark is applied are recyclable or are made of recycled materials.

If the relevant goods or services do not have the relevant characteristic or quality, then the mark may be deceptive under Trademark Act Section 2(a) or deceptively misdescriptive under Section 2(e)(1). In those cases, the examining attorney should follow the same procedures as would apply to any deceptive or deceptively misdescriptive mark. For more information, see TMEP §§1203.02–1203.02(g) and 1209.04.

APPENDIX A: UNIVERSAL SYMBOLS COMMONLY APPEARING IN MARKS Discuss this section here.

The universal symbols discussed below frequently appear in applied-for marks. Some of these symbols are so widely used and well known that they will have only non-trademark significance when used with almost any product or service in any context or field. Others will fail to function as source indicators only when used with particular goods or services. Nonetheless, all of these symbols could function as source indicators if they are displayed in the applied-for mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. See Part II. B. Like any design element, all of these symbols may be used in an ornamental manner on goods and, if so, should be refused accordingly. Finally, depending on the particular facts and available evidence, other refusals may apply to marks containing these symbols (e.g., Section 2(e)(1), Section 2(d), Section 2(a)).

See Appendix B for examples of the marks discussed.

A. Awareness Ribbon Symbols

The awareness ribbon symbol is a representation of a ribbon intended to signify and promote awareness of a particular cause. The specific cause represented depends on the color or color scheme displayed.54 For example, the pink awareness ribbon is commonly associated with awareness of breast cancer and related causes.55 Yellow ribbons are frequently used to indicate support of the armed forces.56 And red ribbons are typically associated with awareness of AIDS/HIV or heart disease.57

Due to the widespread use of the awareness ribbon in various colors to indicate support for, or awareness of, a cause, the awareness ribbon shape by itself (as shown in the heading above) will not function as a source indicator. However, the examining attorney must evaluate an awareness ribbon symbol in a mark as a whole, including the color, color scheme, pattern, or other matter inside of the ribbon, to determine whether it functions as a source indicator.

Some awareness ribbons are so widely used and well known that they are unlikely to function as a mark when used in connection with almost any goods or services. These include ribbons in pink,58 yellow, red, and possibly others.59 And, even when an awareness ribbon symbol features a particular color, color scheme, or pattern that is not commonly used or widely recognized, the examining attorney should evaluate whether the symbol is inherently distinctive.

The actions an examining attorney will take when examining a mark featuring an awareness ribbon symbol will depend on which of the following categories the awareness ribbon symbol falls under:

Category 1: The awareness ribbon symbol is not displayed in the applied-for mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. The color, color scheme, pattern, or other matter inside the awareness ribbon shape is not inherently distinctive and the evidence shows that the symbol’s use by various parties in that color, color scheme, or pattern is so widespread, and its meaning so widely understood, that it will likely be perceived as only providing information or conveying a message when used in connection with the goods or services.

This type of awareness ribbon symbol fails to function as a mark and the examining attorney must refuse registration if the symbol forms the entire mark or appears with only other non-source-indicating matter, or disclaim the symbol if it appears with registrable matter.

Awareness ribbon symbols in this category are incapable of functioning as a trademark or service mark. Thus, if the applied-for mark consists entirely of this type of symbol, claiming acquired distinctiveness under §2(f) or amending the application to seek registration on the Supplemental Register will not overcome the refusal. Likewise, a claim of acquired distinctiveness in part will not obviate a disclaimer requirement.

Awareness ribbon symbols that do not contain inherently distinctive matter inside the ribbon, and are displayed in black and white, or gray scale, because they appear in non- color mark drawings, are incapable of functioning as a trademark or service mark and would be subject to the same procedures set forth above.

Examples:

Pink ribbon Yellow Ribbon Black-and-White or Gray Scale Ribbon

Category 2: The awareness ribbon symbol is not displayed in the applied-for mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. The color, color scheme, pattern, or other matter inside the awareness ribbon shape is not inherently distinctive and there is no evidence that the awareness ribbon symbol shown in the mark is widely used by various parties or that its meaning is widely understood.

In these cases, the symbol is not inherently distinctive and fails to function as a mark because, given the widespread use of awareness ribbons in various colors and patterns generally, the symbol will not be perceived as a source indicator. Thus, the examining attorney must refuse registration if the symbol forms the entire mark (or appears with other non-source-indicating matter), or require a disclaimer of the symbol if the symbol appears with registrable matter. However, the applicant may overcome the refusal by showing acquired distinctiveness based on actual evidence establishing recognition of the proposed mark as a source indicator,60 or by amending the application to seek registration on the Supplemental Register. A disclaimer requirement may be obviated by claiming acquired distinctiveness in part as to the symbol based on actual evidence.

Examples:

for “promoting public awareness of domestic violence, sexual assault and child abuse.”61

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for “surgery; and medical services, namely, treatment of breast disease.”62 The mark consists of the literal portion RAISING BREAST CANCER AWARENESS IN THE MOUNTAIN STATE, and the universal breast cancer awareness ribbon superimposed on a map of West Virginia.63

Category 3: The matter inside the awareness ribbon shape in the mark is inherently distinctive or otherwise registrable (e.g., non-descriptive/non-informational wording, registrable design elements) and there is no evidence that the awareness ribbon shown in the mark is widely used by various parties or that its meaning is widely understood.

No refusal (or disclaimer) is necessary, as long as the awareness ribbon is not used ornamentally on the specimen, because the ribbon shape and the matter within it create a registrable unitary whole.

Examples:

for “charitable fund raising, namely, raising funds for breast cancer research and treatment.”64

for “educational services, namely, conducting conferences, workshops, seminars, classes, and meetings in the field of autism and advocacy on behalf of autistic children and adults.65

B. Recycling Symbol

The recycling symbol typically appears on materials to indicate that they are recyclable or made from recycled matter.66 However, the symbol is also used in connection with a wide assortment of goods and services in a variety of fields to indicate that the goods or services involve recycling or are otherwise environmentally friendly.67

Because of the widespread use of the symbol and the resulting general recognition of the symbol’s significance, the symbol is not likely to function as a source indicator. Instead, consumers are likely to view it as providing information about the goods or services, in

11 DRAFT – 3 AUG 2012 which case a failure-to-function refusal is appropriate. Even when the symbol is displayed on clothing and fashion accessories in a manner that would normally be considered trademark use, the mark likely will be perceived as conveying an informational message (e.g., that the wearer supports recycling or environmental awareness).68 And, usually, the symbol also will have descriptive significance as applied to the relevant goods or services.

C. Caduceus , Rod of Asclepius , and Prescription Symbol

The caduceus and the Rod of Asclepius are commonly used to indicate that goods or services are medical in nature or otherwise relate to the medical profession.69 The prescription symbol is frequently used in connection with prescription drugs or medicated goods, or with services relating to these items.70 For any marks containing these symbols, the examining attorney should review the specimen and consider the goods/services to determine if the mark functions as a source indicator or instead is informational. In those instances that the mark fails to function, there is likely also a valid basis for finding the symbol descriptive.

D. Religious Symbols

Religious symbols, such as the Latin cross and the Star of David, will be informational or have descriptive significance when used on a variety of goods and services.71 For example, in connection with media such as books or videos, the Star of David is likely to be perceived as providing information about or describing the medium’s content. A Latin cross used in an advertisement for services is likely to be viewed as informational (i.e., indicating that the business providing the services operates according to Christian principles).

E. Currency Symbols

When used with financial services, such as currency exchange or banking, currency symbols, such as the dollar sign or the euro symbol, will likely be informational and merely descriptive. However, when used in connection with other types of goods or services, these symbols may be arbitrary or suggestive and otherwise function as a mark.

F. Universal Prohibition Symbol

The universal prohibition symbol, which usually appears superimposed over another image or wording, is a visual representation of “no,” “not,” or “prohibited.”72 When the prohibition symbol is superimposed over other mater, the design as whole is unitary; thus, no disclaimer of the prohibition symbol apart from the other matter is necessary. However, the examining attorney must consider whether the design as a whole (i.e., the symbol and the image it is superimposed over) fails to function as a mark or is merely descriptive (or both) and thus must be refused or disclaimed.

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APPENDIX B: EXAMPLES Discuss this section here.

A. Marks Displaying an Unusual Depiction of a Universal Symbol

In the following examples, the universal symbols shown are highly stylized, incorporate elements that are not usually in the symbol, or are integrated with other matter in the mark, resulting in a distinct commercial impression or a source-indicating unitary whole. For each of the examples in this section, assume that the specimen otherwise shows proper use of the applied-for mark as a trademark or service mark.

Applied-for Mark: design consisting of a stylized awareness ribbon73

Services: Medical services, namely, treatment of breast cancer

The mark combines two universal symbols–the pink awareness ribbon and the peace symbol–into one design, resulting in a distinct commercial impression apart from the usual meaning of the two symbols. Thus, although the services relate to breast cancer, the mark is registrable.

Applied-for Mark: design consisting of a stylized caduceus74

Services: Medical clinics; medical consultations; medical services

Although the caduceus symbol is commonly used in an informational manner in connection with medical services, the mark here displays a highly stylized version of the symbol in which the snakes that usually appear have been replaced with a series of incomplete rings. As a result, the mark creates a distinct commercial impression apart from the usual significance of the symbol and thus is registrable.

Applied-for Mark: SISTERS NETWORK INC etc. & design consisting of a stylized pink awareness ribbon75

Services: Charitable services, namely, organizing fundraising services and events to raise funds in the field of breast cancer research and local community breast health awareness programs

The mark displays a highly stylized version of the pink awareness ribbon symbol featuring sneakers, giving the appearance of a person walking. As a result, the mark creates a distinct commercial impression apart from the usual significance of the symbol. Therefore, no disclaimer of the symbol is necessary.

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Applied-for Mark: RECYCLE AMERICA ALLIANCE & design consisting of a stylized recycling symbol76

Services: Recycling services

The recycling symbol in the mark is highly stylized and incorporates elements that connote the American flag, resulting in a distinct commercial impression apart from the symbol’s usual meaning. Therefore, a disclaimer of the symbol is unnecessary.

Applied-for Mark: REKLAIM TECHNOLOGIES, INC.77

Services: Recycling and reclamation of waste products

Although available evidence supports the conclusion that an accurate depiction of a recycling symbol would be both informational and descriptive when used in connection with recycling/reclamation services, a disclaimer of the symbol in this mark is unnecessary because of the symbol’s integration with the other elements in the mark. Specifically, the symbol forms a portion of the letter “k” (as opposed to forming the entire letter) and wraps around the letter “l,” obscuring portions of the symbol. Compare this example to the first example in Section B. below.

Applied-for Mark: NO STREAKING PROFESSIONAL WINDOW WASHING & universal prohibition symbol design78

Services: Window cleaning

The design appearing within the universal prohibition symbol connotes two different meanings of “streaking” and is suggestive when considered in connection with the applicant’s window cleaning services. The universal prohibition symbol and this design form a registrable unitary whole. Thus, no disclaimer of the design, as a whole, or of the universal prohibition symbol by itself, is necessary.

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B. Marks Displaying an Accurate, Unregistrable Depiction of a Universal Symbol

The following examples consist of specimens displaying marks featuring accurate depictions of universal symbols that are informational and thus fail to function as source indicators. As these examples indicate, when a universal symbol fails to function because it only provides information about the goods or services, it usually also merely describes a feature or characteristic of the goods or services, and the available evidence likely will support a refusal (or a disclaimer requirement) based on mere descriptiveness under Trademark Act Section 2(e)(1). Although the examples in this section focus solely on the foregoing bases for refusal, an examining attorney reviewing a mark containing a universal symbol should also consider whether, given the particular facts and available evidence, other refusals are appropriate (e.g., Section 2(d) refusal, Section 2(a) refusal based on deceptiveness, Section 2(e)(1) refusal based on deceptive misdescriptiveness).

Applied-for Mark: TMARKEY (with the “A” replaced by a recycling symbol)79

Goods: Reusable shopping bags made from recycled materials

The specimen shows the mark appearing on a reusable shopping bag. Although the recycling symbol in this mark replaces the letter “A” in TMARKEY, the symbol is not stylized or otherwise integrated with the mark. Because evidence supports the conclusion that the symbol is informational and merely descriptive matter, indicating that the bags are recyclable or are made from recycled materials, the symbol is unregistrable and must be disclaimed. Compare this example to the fifth example in Section A. above.

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Applied-for Mark:80

Goods: Electric lighting fixtures

The specimen consists of a label affixed to the boxes of applicant’s goods and shows the applied-for mark appearing with informational wording. The TTAB held that this applied-for mark failed to function as a trademark for the applicant’s lighting fixtures, finding that “the symbols comprising applicant’s proposed mark have a recognized meaning”81 and that “all the evidence in the record indicates that the mark would be perceived as an indication that the contents of applicant’s boxes [for its goods] are not fragile.”82

Applied-for Mark:83

Services: Physician services

The specimen consists of an advertisement displaying the applied-for mark. The symbol in the mark is an accurate representation of the caduceus symbol, and evidence supports the conclusion that the symbol is informational and merely descriptive when used in connection with medical services such as those offered by the applicant. Thus, the symbol must be disclaimed.

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Applied-for Mark:84

Services: Charitable fundraising services

The specimen consists of an advertising flyer displaying the applied-for mark. Evidence supports the conclusion that the pink awareness ribbon symbol is informational and merely descriptive as applied to charitable fundraising services. The slight stylization of the symbol in the mark is not sufficient to create a distinct commercial impression separate and apart from the symbol’s usual significance. Thus, the symbol must be disclaimed. (Although it is not necessary in this case, in some cases a disclaimer of wording “PINK RIBBON” or similar wording may be appropriate.)

Applied-for Mark:85

Goods: Gamma radiation detector for electronic detection of hidden contraband; gamma scintillation detectors; radiation-measuring instruments

The specimen shows the applied-for mark appearing on a personal radiation detector. Evidence indicates that the radiation symbol is used to warn others of sources of radiation. Thus, when used in connection with the goods it is informational and merely descriptive. Therefore, the symbol must be disclaimed.

17 DRAFT – 3 AUG 2012

Applied-for Mark: design consisting of the recycling symbol86

Goods: Paper

The specimen shows the applied-for mark, an accurate, minimally stylized depiction of the recycling symbol, appearing on the packaging for paper. Evidence indicates that the recycling symbol is used to indicate that materials are recycled or recyclable, and that the recycling symbol commonly appears on paper products. Thus, although the applied-for mark appears on the packaging in a location where a trademark might appear, the applied-for mark must be refused on failure to-function grounds because it is informational matter. A Section 2(e)(1) refusal would also be appropriate because the symbol merely describes a characteristic of the goods.

Applied-for Mark: design consisting of the radiation symbol87

Goods: X-ray scanners for security purposes

The specimen shows the applied-for mark, an accurate, non-stylized depiction of the radiation symbol, appearing on x-ray equipment. Evidence indicates that the radiation symbol is used to warn others of sources of radiation and is commonly appears in connection with x-ray equipment. Thus, the applied-for mark fails to function as a trademark for the goods because it is informational. A Section 2(e)(1) refusal would also be appropriate because the symbol merely describes a characteristic of the goods.

Applied-for Mark: design consisting of a yellow awareness ribbon symbol88

Goods: Coffee mugs

The specimen shows the mark, an accurate, minimally stylized depiction of a yellow awareness ribbon symbol, displayed prominently on applicant’s mug. Evidence indicates that this symbol is widely recognized as indicating support for the armed forces and thus the symbol is commonly used by a many different parties on a variety of goods. Therefore, the applied-for mark fails to function as a trademark, because it would be perceived as conveying an informational message (i.e., support for the armed forces) and serving as ornamentation, rather than indicating the mug’s source.

18 DRAFT – 3 AUG 2012

Applied-for Mark: design consisting of a euro symbol89

Services: Currency exchange services

The specimen shows the applied-for mark, an accurate, minimally stylized depiction of the euro symbol, appearing in the upper-left corner of a website advertising applicant’s currency exchange services. Evidence indicates that the euro symbol identifies the currency of the European Union and is commonly used in connection with financial services. Thus, although the applied-for mark appears where service marks commonly appear on websites, the applied- for mark must be refused on failure-to- function grounds because it would be perceived as informational matter (i.e., indicating that the applicant’s services involve the exchange of euros). A Section 2(e)(1) refusal would also be appropriate because the symbol merely describes a characteristic or feature of the services.

Applied-for Mark: design consisting of the prescription symbol90

Goods: Prescription medicated lotions for treating dermatological conditions

The specimen shows the applied-for mark, an accurate, non-stylized depiction of the prescription symbol, prominently displayed on the packaging for applicant’s medicated lotion. Evidence indicates that the prescription symbol is commonly used to indicate the medical nature of a variety of goods. Thus, although the applied-for mark is prominently placed on the packaging where a trademark might appear, it fails to function as a trademark for the goods because it would likely be perceived as informational matter. A Section 2(e)(1) refusal would also be appropriate because the symbol merely describes a characteristic of the goods.

19 DRAFT – 3 AUG 2012

Goods: Clothing, namely, shirts made from recycled materials

The specimen shows the mark, an accurate, minimally stylized depiction of recycling symbol, displayed on a t-shirt label. Evidence indicates that the recycling symbol is widely recognized as designating materials that are recyclable or have been recycled. Evidence also shows that clothing labels typically feature information regarding the composition of the clothing. Thus, the applied-for mark fails to function as a trademark, because it serves to provide information about the shirt, rather than indicating the shirt’s source. In this case, a Section 2(e)(1) refusal would also be appropriate because the symbol merely describes a characteristic or feature of the goods.

Goods: Clothing, namely, shirts made from recycled materials

The specimen shows the mark, an accurate, minimally stylized depiction of recycling symbol, displayed prominently on a shirt. Evidence indicates that the recycling symbol is widely recognized as designating recyclable materials or indicating that goods or services involve recycling or are otherwise environmentally friendly. Evidence also shows that the symbol is commonly used by many different parties in connection with a variety of goods and services. Thus, the applied-for mark fails to function as a trademark, because it would be perceived as conveying an informational message (i.e., indicating support for recycling) and serving as ornamentation, rather than indicating the shirt’s source. A Section 2(e)(1) refusal would also be appropriate because the symbol merely describes a characteristic or feature of the goods.

20 DRAFT – 3 AUG 2012

Applied-for Mark: design consisting of the Latin cross93

Services: Conducting Christian religious prayer services

The specimen shows the applied-for mark, an accurate, non-stylized depiction of a Latin cross, appearing in the upper-left corner of a website advertising applicant’s religious prayer services. Evidence indicates that the Latin cross is commonly used as a symbol of Christianity. Thus, although the applied-for mark appears where service marks commonly appear on websites, the applied-for mark fails to function as a service mark because it is informational matter (i.e., indicating that applicant’s services feature Christian doctrines). A Section 2(e)(1) refusal would also be appropriate because the symbol merely describes a characteristic or feature of the services.

Applied-for mark: design consisting of the Latin cross94

Services: Construction of buildings

The specimen shows the applied- for mark, an accurate, non- stylized depiction of a Latin cross, appearing in the upper-left corner of a website advertising applicant’s construction services. Evidence indicates that the Latin cross is commonly used as a symbol of Christianity. Thus, although the applied-for mark appears in a place and manner in which a service mark typically appears on a website specimen, the applied- for mark fails to function as a service mark because it is informational matter. Specifically, the mark indicates that the

21 DRAFT – 3 AUG 2012 applicant’s services are provided by a Christian company (i.e., a company that operates based on Christian principles). (15)

Applied-for Mark: design consisting of the peace symbol95

Goods: Decals

The specimen shows the mark, an accurate, non-stylized depiction of a peace symbol, on a decal. Evidence indicates that the peace symbol is widely recognized as indicating support for peace and that the symbol is used by many different parties on a variety of goods. Thus, the applied-for mark fails to function as a trademark, because it conveys an informational message and serves as ornamentation, rather than indicating the decal’s source.

C. Marks Displaying an Accurate, Registrable Depiction of a Universal Symbol

The following examples show specimens featuring marks consisting of accurate depictions of universal symbols, which are nonetheless likely to be perceived as source indicators because of the goods they are used with.

Applied-for Mark:96

Goods: Candy

The specimen shows the applied- for mark appearing on the product packaging in a trademark manner. Although the mark displays an accurate depiction of the radiation symbol, it has no informational or descriptive significance when used in connection with candy. Thus, no refusal is necessary.

22 DRAFT – 3 AUG 2012

Applied-for Mark:97

Goods: Wines

The specimen shows the applied-for mark appearing on the product packaging in a trademark manner. Although the mark includes an accurate depiction of the radiation symbol, it has no informational or descriptive significance when used in connection with wine. Thus, no disclaimer is necessary.

Applied-for Mark: design consisting of a caduceus98

Goods: Musical instruments, namely, guitars

The specimen shows the applied-for mark appearing on an area of the guitar where trademarks commonly appear. Although the mark features an accurate depiction of the caduceus symbol, it has no informational significance when used in connection with guitars and thus no refusal is necessary.

23 DRAFT – 3 AUG 2012

24 1 See Webster’s New World College Dictionary 1356 (3rd ed. 1997) (defining “symbol” as “something that stands for, represents, or suggests another thing; esp., an object used to represent something abstract); id. at 1460 (defining “universal” as “used, intended to be used, or understood by all”). 2 See In re Halogen Lighting Prods., Ser. No. 78426018, 2008 TTAB LEXIS 697, at *11 (Sept. 29, 2008) (“Non-literal symbols are ubiquitous in our culture, and are frequently used as a simple and easily-recognizable message, particularly where it is necessary to immediately convey a message (as with a warning), and it cannot be assured that the recipient will be able, or have time to, read a written message.”). 3 See About.com, Recycling Symbols Made Easy, http://greenliving.about.com/od/recyclingwaste/tp/recycling_symbols.htm (accessed Aug. 2, 2012). 4 See U.S. Dept. of Health & Human Servs., Examples of Radiation Signs and Symbols for Work Areas, Buildings, Transportation of Cargo, http://www.remm.nlm.gov/radsign.htm (accessed Aug. 2, 2012). 5 See Graphic Products, Biohazard Signs, http://www.graphicproducts.com/sign-printers/biohazard-signs.html (accessed Aug. 2, 2012). 6 See In re Halogen Lighting Prods., 2008 TTAB LEXIS 697, at *12 (“It is easily seen that the ‘international prohibition symbol,’ combined with another symbol means ‘no’ or ‘not’ with respect to the second symbol’s meaning.”); Free Signage.com, Prohibition Signs, http://www.freesignage.com/prohibited_signs.php (accessed Aug. 2, 2012). 7 Certain symbols that have a widely recognized meaning, such as the Red Cross, are subject to specific statutory protections restricting their use and may be refused under various provisions of the Trademark Act. See TMEP §1205.01. However, this examination guides focuses on those universal symbols that are available to anyone to use in providing information in a relevant context. 8 See 15 U.S.C. §§1051, 1052, 1053, 1127; TMEP §§1202, 1202.03. 9 See 15 U.S.C. §1052(e)(1); TMEP §§1209, 1209.01(b). 10 See 15 U.S.C. §§ 1052(a), 1052(e)(1); TMEP §§1203.02–1203.02(g), 1209.04. 11 The examining attorney must ensure that an accurate description is included the application record. See TMEP §§808.03, 808.03(b), 808.03(d). 12 See id. §104. If the design codes assigned to the mark do not accurately reflect the significant elements of the mark, the examining attorney should ensure that the design codes are updated so that the correct codes are listed. See id. §808.03(f). 13 For instance, one could find information about the recycling symbol, even without knowing the name of the symbol, by entering the following textual description in a search engine: “green curved arrows triangle.” 14 See Symbols.com, Graphic Index, http://www.symbols.com/graphic-index/ (accessed Aug. 2, 2012). 15 The Trademark Law Library’s non-circulating reference materials regarding symbols include the following: Henry Dreyfuss, Symbol Sourcebook (1984); Sandra Forty, Symbols (2003); Rudolf Modley, Handbook of Pictorial Symbols (1976). 16 37 C.F.R. §2.61(b). 17 This examination guide focuses on universal symbols. However, it should be noted that symbols, symbol-like elements, and other designs that are not universal symbols may nonetheless be perceived only as informational matter and thus fail to function as marks. See, e.g., In re Dunn-Edwards Corp., Ser. No. 76201822, 2004 TTAB LEXIS 727 (Dec. 16, 2004) (holding that the applied-for mark, a design suggesting a paint brush being used on a brick wall, does not function as a trademark for applicant’s masonry paint, but instead functions merely as an informational icon indicating the paint could be used on masonry). 18 TMEP §§808.01, 808.02, 808.03(b). 19 Cf. In re LRC Prods. Ltd., 223 USPQ 1250, 1252 (TTAB 1984) (noting that “where designs or representations were more realistic and where the design left no doubt about the depiction of a central feature or characteristic of the goods or services,” the Board has found that such designs and representations are merely descriptive); TMEP §1213.03(c) (“No disclaimer of highly stylized pictorial representations of descriptive matter should be required[,] because the design element creates a distinct commercial impression.”); id. §1213.05(f) (“The visual presentation of a mark may be such that the words and/or designs form a unitary whole. In such a case, disclaimer of individual nondistinctive elements is unnecessary.”); id. §1213.05(g)(iv) (“If literal and design elements in a mark are so merged together that they cannot be divided or regarded as separable elements, these elements may be considered unitary.”). 20 Cf. TMEP §§1213.03(c), 1213.05(g). 21 See 15 U.S.C. §§1051, 1052, 1053 1127; In re Bose Corp., 192 USPQ 213, 215 (C.C.P.A. 1976) (“Before there can be registration, there must be a trademark . . . .”); In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977) (“Registration presupposes the existence of a trademark to be registered.”); TMEP §1202. 22 See 15 U.S.C. §1127; TMEP §1202. 23 In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Vertex Grp., LLC, 89 USPQ2d 1694, 1701 (TTAB 2009) (“As is the case with any trademark, mere intent that a word, name, symbol or device function as a trademark or service mark is not enough in and of itself.”). 24 In re Eagle Crest, Inc., 96 USPQ2d at 1229; Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973). 25 See In re Eagle Crest, Inc., 96 USPQ at 1229 (noting that, to determine how a designation would be perceived by the relevant public, the Board “look[s] to the specimens and other evidence of record showing how the designation is actually used in the marketplace”); In re Aerospace Optics, Inc., 78 USPQ2d at 1862 (“A critical element in determining whether matter sought to be registered is a trademark is the impression the matter makes on the relevant public. Thus . . . the critical inquiry is whether the asserted mark would be perceived as a source indicator. . . . To be a mark, the term must be used in a manner calculated to project to purchasers or potential purchasers a single source or origin for the goods. . . . We determine whether this has been achieved by examining the specimens of use along with any other relevant material submitted by applicant during prosecution of the application.”); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998) (“In order to assess the commercial impact created by the designation . . . we look to the specimens and other materials which show how the mark is actually used in the marketplace.”). 26 See TMEP §1202.04. 27 Cf. In re Schwauss, 217 USPQ 361 (TTAB 1983) (holding applied-for mark, consisting of FRAGILE in a “jarred or broken” stylization, failed to function as a trademark for labels and bumper stickers). 28 See Graphic Products, Biohazard Signs, http://www.graphicproducts.com/sign-printers/biohazard-signs.html (accessed Aug. 2, 2012). 29 Cf. In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (“Based on the record before us, our view is that the phrase DRIVE SAFELY should remain in the public domain. Contrary to the gist of some of applicant’s arguments, to grant exclusive rights to applicant in this ordinary and commonly used safety admonition [for use in connection with automobiles and structural parts therefor] would interfere with the rights of others in the automobile industry to freely use the familiar phrase . . . to promote safe driving and/or that purchasers can drive safely in their make of automobiles. . . . [T]o the extent that there is an association in purchasers’ minds of DRIVE SAFELY with applicant as a result of applicant’s extensive promotion, this is an association that is not entitled to legal recognition resulting in a trademark registration.”); In re Schwauss, 217 USPQ at 362 (“[T]o allow registration [of FRAGILE in a “jarred or broken” stylization for labels and bumper stickers] would achieve the absurd result of hampering others in their use of the common word ‘fragile’ on any label designed to be placed on any other object to indicate the fragility of said object. . . . Even assuming that the style of the letter in which ‘FRAGILE’ is presented is somewhat fanciful, the Board fails to discern in this any new or added source identification capacity.”). 30 See BIOHAZARD (& design), U.S. Registration No. 3813704 (Principal Register, July 6, 2010). 31 See In re Eagle Crest, Inc., 96 USPQ2d at 1230-31. 32 See id. 33 See id. at 1230. 34 See id. 35 See id. at 1230-31. 36 TMEP §1202.03. 37 See TMEP §1202.03. 38 15 U.S.C. §§1051, 1052, 1127; see In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1863 (“It is well established that the refusal of failure to function is properly based on Sections 1, 2 and 45 of the Act.”). 39 15 U.S.C. §§1051, 1052, 1053, 1127. 40 15 U.S.C. §§1091, 1127; see TMEP §1202. 41 See TMEP §§1202, 1301.02(a). 42 See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1232 (TTAB 2010) (finding that the examining attorney had “shown prima facie that the slogan [ONCE A MARINE, ALWAYS A MARINE] would be perceived solely as informational matter rather than as a trademark and applicant [had] submitted no evidence to rebut that showing”). 43 Id. §1202. 44 See id.; cf. In re Right-On Co., 87 USPQ2d 1152, 1157 (TTAB 2008) (noting that, with respect to §66(a) applications, “it is appropriate for examining attorneys to issue an ornamentation refusal if the mark is decorative or ornamental on its face as depicted on the drawing page and described in the description of the mark”). 45 See TMEP §1202. If possible, this should be done in the initial Office action. See id. 46 See id. 47 See In re West-Com Nurse Call Sys., Ser. No. 78438594, 2007 TTAB LEXIS 454, at *2 (Sept. 13, 2007) (noting that the examining attorney was correct in arguing that “a claim of acquired distinctiveness under Section 2(f) is irrelevant to a refusal on the ground of failure to function as a mark, since the issue is whether the specimens show use of the applied-for designation as a mark”); In re Wakefern Food Corp., 222 USPQ 76, 79 (TTAB 1984) (agreeing with the examining attorney that “evidence of distinctiveness under Section 2(f) of the Act is irrelevant to the issue of whether the subject phrase [at issue] functions as a technical service mark”). 48 See In re West-Com Nurse Call Sys., 2007 TTAB LEXIS 454, at *2; In re Wakefern Food Corp., 222 USPQ at 79. 49 Cf. In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (“Based on the record before us, our view is that the phrase DRIVE SAFELY should remain in the public domain. Contrary to the gist of some of applicant’s arguments, to grant exclusive rights to applicant in this ordinary and commonly used safety admonition [for use in connection with automobiles and structural parts therefor] would interfere with the rights of others in the automobile industry to freely use the familiar phrase . . . to promote safe driving and/or that purchasers can drive safely in their make of automobiles. . . . [T]o the extent that there is an association in purchasers’ minds of DRIVE SAFELY with applicant as a result of applicant’s extensive promotion, this is an association that is not entitled to legal recognition resulting in a trademark registration.”); In re Schwauss, 217 USPQ at 362 (“[T]o allow registration [of FRAGILE in a “jarred or broken” stylization for labels and bumper stickers] would achieve the absurd result of hampering others in their use of the common word ‘fragile’ on any label designed to be placed on any other object to indicate the fragility of said object.”). 50 The applicant may amend the application to an intent-to-use basis, but it likely will only temporarily overcome the refusal, given that a specimen showing proper trademark or service mark use is required before a registration may issue. See TMEP §1103. 51 See Trademark Act Section 6(a), 15 U.S.C. §1056(a); TMEP §§1213, 1213.01(b), 1213.02, 1213.03(a). 52 See TMEP §807.14(a). 53 See Trademark Act Section 6(a), 15 U.S.C. §1056(a); TMEP §§1213, 1213.01(b), 1213.02, 1213.03(a). 54 See, e.g., Support Store, Cause Awareness By Color, http://www.bumperstickermagnet.com/cause-awareness-by- color.html (accessed Aug. 2, 2012). 55 See id. 56 See id. 57 See id. 58 The Trademark Trial and Appeal Board has stated that the pink awareness ribbon “is the universal symbol of breast cancer awareness” and “[a]s such, it cannot function as a source identifier as a general proposition.” In re TurningPoint Women’s Healthcare, Inc., Ser. Nos. 78360812 & 78360815, 2008 TTAB LEXIS 696, at *19 (Feb. 28, 2008). This symbol appears in connection with the charity activities of numerous organizations and is used on a wide variety of products, including clothing, jewelry, sports equipment, and household items. Often, when it is used, it has informational or ornamental characteristics, or both. Thus, it is more likely that consumers, upon encountering the pink ribbon symbol on a product, would view it as informational or decorative regardless of the particular context or use. For instance, when a pink ribbon is displayed on the packaging for a household appliance, it would likely be viewed as indicating that the product has some connection to a breast cancer-related cause, e.g., some portion of the proceeds from the sale of the appliance would go towards breast cancer research. Or, if used on a shirt, the symbol may be viewed as conveying the message that the wearer is a supporter of breast cancer survivors or breast cancer causes in general. 59 See, e.g., Support Store, Cause Awareness By Color, http://www.bumperstickermagnet.com/cause-awareness-by- color.html (accessed Aug. 2, 2012). 60 For awareness ribbon symbols in this category, evidence of five years’ use usually will not be sufficient to show that the mark has acquired distinctiveness. See TMEP §§1212.06 – 1212.06(e)(iv) for information on establishing acquired distinctiveness by actual evidence. 61 See U.S. Registration No. 3826694 (Supplemental Register, July 27, 2010). 62 See U.S. Registration No. 3240814 (Supplemental Register, May 8, 2007). 63 See id. 64 See U.S. Registration No. 3390807 (Principal Register, Mar. 4, 2008). 65 See U.S. Registration No. 2758184 (Principal Register, Sept. 2, 2003). 66 About.com, Recycling Symbols Made Easy, http://greenliving.about.com/od/recyclingwaste/tp/recycling_symbols.htm (accessed Aug. 2, 2012). 67 See id. 68 See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1230 (TTAB 2010) (holding that consumers would not view the “old and familiar” slogan ONCE A MARINE, ALWAYS A MARINE as a trademark indicating the source of the applicant’s clothing because they would be accustomed to seeing it displayed on clothing from many different sources, and noting that “[i]t is clear that clothing imprinted with this slogan would be purchased by consumers for the message it conveys”). 69 Webster’s New World College Dictionary 195 (3rd ed. 1997) (defining “caduceus” as “the staff of an ancient herald; esp., the winged staff with two serpents coiled about it . . . an emblematic staff like this with either one or two serpents, used as a symbol of the medical profession”); THEFREEDICTIONARY.COM, search of “Rod of Asclepius,” http://medical-dictionary.thefreedictionary.com/Rod+of+Asclepius (Aug. 2, 2012) (citing Segen’s Medical Dictionary) (defining “Rod of Asclepius” as “[t]he ‘correct’ symbol of medicine, which is a knarled [sic] wooden staff with a single encircling snake”). 70 See Webster’s New World College Dictionary 1178 (3rd ed. 1997) (defining “Rx” as “symbol for PRESCRIPTION”). 71 A mark containing a Greek cross (i.e., an upright equilateral cross) may be subject to other refusals. See TMEP § 1205.01. 72 See In re Halogen Lighting Prods., Ser. No. 78426018, 2008 TTAB LEXIS 697, at *12 (Sept. 29, 2008) (“It is easily seen that the ‘international prohibition symbol,’ combined with another symbol means ‘no’ or ‘not’ with respect to the second symbol’s meaning.”); Free Signage.com, Prohibition Signs, http://www.freesignage.com/prohibited_signs.php (accessed Aug. 2, 2012). 73 See U.S. Registration No. 4057654 (Principal Register, Nov. 15, 2011). 74 See U.S. Registration No. 3327657 (Principal Register, Oct. 30, 2007). 75 See U.S. Registration No. 3992156 (Principal Register, July 12, 2011). 76 See U.S. Registration No. 3024094 (Principal Register, Dec. 6, 2005). 77 See U.S. Registration No. 3574487 (Principal Register, Feb. 17, 2009). 78 See U.S. Registration No. 4093706 (Principal Register, Jan. 31, 2012). 79 Because some of the examples in this appendix were created to illustrate the concepts discussed in the examination guide, they may appear to be mock-ups, artist’s renderings, or printer’s proofs. In actual examination, certain visual characteristics of a specimen may call into question whether it shows actual use of the applied-for mark (see TMEP §904.04(a)); however, the artificial appearance of the some of these specimens should be disregarded here. 80 See U.S. Application Serial No. 78426018 (filed on May 27, 2004). 81 In re Halogen Lighting Prods., Ser. No. 78426018, 2008 TTAB LEXIS 697, at *13 (Sept. 29, 2008). 82 Id. at *14. 83 See U.S. Registration No. 3150822 (Principal Register, Oct. 3, 2006). 84 See U.S. Registration No. 4040809 (Principal Register, Oct. 18, 2011). 85 See U.S. Registration No. 3575630 (Principal Register, Feb. 17, 2009). 86 This example was created for this examination guide. See supra n.79. 87 This example was created for this examination guide. See supra n.79. 88 This example was created for this examination guide. See supra n.79. 89 This example was created for this examination guide. See supra n.79. 90 This example was created for this examination guide. See supra n.79. 91 This example was created for this examination guide. See supra n.79. 92 This example was created for this examination guide. See supra n.79. 93 This example was created for this examination guide. See supra n.79. 94 This example was created for this examination guide. See supra n.79. 95 This example was created for this examination guide. See supra n.79. 96 See U.S. Registration No. 3862084 (Principal Register, Oct. 12, 2010). 97 See U.S. Registration No. 3792517 (Principal Register, May 25, 2010). 98 This example was created for this examination guide. See supra n.79.